Design Patents and IndefinitenessAugust 20, 2018

            In a recent decision, the Federal Circuit addressed indefiniteness and enablement issues under 35 U.S.C. § 112 as they apply to design patent applications. In In re: Ron Maatita, the court held that two-dimensional drawings in design patents can meet the definiteness and enablement requirements under § 112, and that the determination includes, at least in part, viewing the drawings as an ordinary observer to determine if infringement comparisons could be made off of the two-dimensional depictions.

            The design patent application at issue covered the design of an athletic shoe bottom (the sole or tread). The application consisted of two figures depicting two-dimensional views of the bottom of a shoe, and included solid and broken lines (NOTE: broken lines in design patent application cover unclaimed environmental features). The application was rejected by the Examiner for failing to satisfy the enablement and definiteness requirements of 35 U.S.C. § 112, first and second paragraphs. In part, the Examiner state that “the application’s use of a single, two-dimensional plan view to disclose a three-dimensional shoe bottom design left the design open to multiple interpretations regarding the depth and contour of the claimed elements, therefore rendering the claim not enabled and indefinite”.

            Eventually, the application was appealed to the Board of Appeals, who affirmed the Examiner’s rejection, and Maatita appealed this rejection to the Federal Circuit.

            The Federal Circuit reversed the Board’s decision. The court stated that the standard for indefiniteness with respect to design patents is connected to the standard for infringement. A design patent is infringed if “an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.”Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc). The court felt that a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure. The court further stated:

In situations like this, where the sufficiency of a disclosure for purposes of § 112 depends on whether a drawing adequately discloses the design of an article, we believe that the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar view illustration. The design for an entire shoe or teapot, for instance, is inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar view drawing. Whether an article infringed would depend on the perspective chosen to view the article, and a two-dimensional drawing provides no fixed perspective for viewing an article. The article would be infringing from one perspective but not from another. The design of a rug or placemat, on the other hand, is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration, which clearly defines the proper perspective. See Ex Parte Salsbury, 38 U.S.P.Q. 149, 1938 WL 28182, at *2 (Com’r Pat. & Trademarks May 5, 1938) (“It is recognized that flat articles can generally be sufficiently illustrated by a single view.”).          

            For Maatita’s application, this meant that the two-dimensional drawings were enough to meet the definiteness standard. The court held, “T]he fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective—and that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement”.

            The takeaway from this is that it is likely that the holding will provide with broader coverage for Maatita, as infringement will occur from only a planar viewing of a potentially infringing shoe, and no additional contour or depth analysis would be required.

            The holding provides an additional consideration to take into account when preparing design patent applications, namely, are three-dimensional drawings necessary, and would there be better coverage with two-dimensional disclosures? While the ability of the two-dimensional disclosures may not fit in every case, they could provide some additional kick in the right circumstances. The proper use of drawings also rebuts a general notion that design patents are too narrow in coverage.

            Luke T. Mohrhauser is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit or contact Luke directly via email at

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